March 2009
Nasdaq Trade Mark Crashes
The New York stock exchange has enough problems at the moment without people trying to rip off its trade marks. Nevertheless they have managed to successfully oppose a trade mark application for NASDAQ by an Italian sports and clothing company called Antartica srl. In March 2000 Antartica filed a Community trade mark (CTM) in respect of classes 09, 12, 14 and 25 for various types of sporting goods and clothing. The application was opposed by the NASDAQ Stock Market Inc (NSM) on the basis of its registered CTM in classes 9, 16, 35, 36, 38 and 42 in respect of various stock market and financial services (none of which had anything to do with clothing or sports wear). The issue therefore was whether NSM’s rights extended to these other goods and services due to the fact that it was a mark with a reputation.
The parties battled it out before OHIM and the OHIM Board of Appeal before proceeding to the European Court of First Instance. Eight years on and the parties have continued their scrap in the European Court of Justice (ECJ) which this month gave the final say. And the ECJ was helpfully guided by another recent case on this point, Intel v CPM (see Briffa article http://www.briffa.com/news/current/intel2.php).
Firstly the ECJ had to consider whether NSM had actually used its NASDAQ mark. Antartica had claimed that because NSM did not directly sell anything under the mark rather its stock market indicies were available free of charge in the press and on TV, there was no “genuine use”. The ECJ quickly dismissed this argument on the basis that NSM were permitted to offer services under the NASDAQ mark free of charge as long as it created or maintained an outlet for those services in the Community, as against the services of other undertakings. The ECJ then considered whether the latter mark took unfair advantage of the earlier mark. Again the ECJ referred to the requirement of a 'link' between the two marks where this was judged against the potential consumers of Antartica's goods, and whether these consumers thought that there was a link between the two marks. Finally ECJ dealt with Antartica’s arguments about reputation by acknowledging the fact that reputation meant knowledge of the mark beyond the consumers of either party's goods and services, but went on to say that 'the reputation of the earlier mark reaches further than the professional public specialising in financial information'.
Therefore the ECJ found in favour of NSM.
Briffa’s Opinion
This case provides another helpful summary of the law in this area.
The ECJ’s findings regarding use may have been obvious but are nonetheless reassuring for businesses which offer their services for free and earn money through advertising and sponsorship such as free websites. There was some interesting comments regarding reputation where the ECJ indicated that the reputation must extend to the general public and not just the consumers of goods and services. This is another indication of how difficult it may be for rights holders to extend their coverage beyond what is covered by their trade mark, unless the marks themselves are very well known. This is why it is more important than ever for small to medium size businesses and owners of less well known trade marks to have very broad coverage.
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